Justia Intellectual Property Opinion Summaries

Uniloc’s patent is directed to a communication system comprising a primary station (base station) and at least one secondary station (computer mouse or keyboard). In conventional systems, such as Bluetooth networks, two devices that share a common communication channel form ad hoc networks called “piconets.” Joining a piconet requires the completion of “inquiry” procedure and “page” procedures, which can take tens of seconds to complete. The invention improves conventional communication systems by including a data field for polling as part of the inquiry message, thereby allowing primary stations to send inquiry messages and conduct polling simultaneously, enabling “a rapid response time without the need for a permanently active communication link” between a parked secondary station and the primary station.In an infringement action, the district court held that the patent’s claims were ineligible under 35 U.S.C. 101. The Federal Circuit reversed, applying the “Alice” test. The claims are directed to a patent-eligible improvement to computer functionality--the reduction of latency experienced by parked secondary stations in communication systems. The claims do not merely recite generalized steps to be performed on a computer using conventional computer activity but are directed to “adding to each inquiry message prior to transmission an additional data field for polling at least one secondary station.” View "Uniloc USA, INC. v. LG Electronics USA, INC." on Justia Law

Oren’s patent covers a system for storing and discharging proppant—a material, such as sand or other particulates, that prevents ground fractures from closing during hydraulic fracturing. Oren sued Grit for infringement, Grit transferred ownership of all the products accused of infringement. Oren and Grit jointly stipulated to dismissal without prejudice of all claims and counterclaims related to the patent. Grit sought inter partes review of claims 1–7. The Board ultimately determined that Grit had not established that any of the challenged claims were unpatentable as obvious over prior art or that the challenged claims were unpatentable, reasoning that neither of the prior references disclosed the patent's configuration. The Federal Circuit vacated, first holding that Grit had standing because Oren previously sued for infringement and is free to reassert those infringement claims. The Board’s determination that prior art does not disclose the patent’s configuration is unsupported by substantial evidence. The Board failed to adequately explain its reasoning. View "Grit Energy Solutions, LLC v. Oren Technologies, LLC" on Justia Law

The Second Circuit affirmed the district court's dismissal of plaintiff's action seeking a declaratory judgment adjudicating the validity of defendants' trademark registrations relating to the "SULKA" mark.The court held that, before a court may entertain an action for declaratory relief in the context of trademarks, the plaintiff must allege that he has taken some action showing that he has both the "definite intent and apparent ability to commence use of the marks on the product." In this case, the court held that defendant's allegations are too vague to support the exercise of federal jurisdiction. The court explained that the only allegation that does relate to the U.S. market is plaintiff's application to register the mark in the United States. However, while his allegation is certainly relevant to the matter of intent, it has little bearing on plaintiff's ability to transition his business to the United States and there were significant reasons for the district court to be skeptical that he was, in fact, prepared to enter the U.S. market. View "Saleh v. Sulka Trading Ltd." on Justia Law

In 1989, Rudy originally filed the 360 application, entitled “Eyeless, Knotless, Colorable and/or Translucent/Transparent Fishing Hooks with Associatable Apparatus and Methods.” Its lengthy prosecution included numerous amendments and petitions, and four Board appeals. In 2014, the Sixth Circuit affirmed the obviousness of all claims then on appeal. Several claims were the subject of a 2015 office action in which the Examiner rejected them as ineligible for patenting under 35 U.S.C. 101. The Board upheld the determination.The Federal Circuit affirmed, stating that it was applying its own law and the relevant Supreme Court precedent, not the Office Guidance, in analyzing subject matter eligibility. Claim 34 is directed to the abstract idea of selecting a fishing hook based on observed water conditions; its three elements (observing water clarity, measuring light transmittance, and selecting the color of the hook) are each abstract, being mental processes akin to data collection or analysis. Claim 34 fails to recite an inventive concept at step two of the “Alice/Mayo test,” and.nothing in the remaining claims meaningfully distinguishes them from claim 34 in a patent eligibility analysis. View "In Re Rudy" on Justia Law

Quincy develops and sells dietary supplements. Its Prevagen® product is sold through brick‐and‐mortar stores and online. Quincy registered its Prevagen® trademark in 2007. Ellishbooks, which was not authorized to sell Prevagen® products, sold dietary supplements identified as Prevagen® on Amazon.com, including items that were in altered or damaged packaging; lacked the appropriate purchase codes or other markings that identify the authorized retail seller of the product; and contained Radio Frequency Identification tags and security tags from retail stores. Quincy sued under the Lanham Act, 15 U.S.C. 1114. Ellishbooks did not answer the complaint. Ellishbooks opposed Quincy’s motion for default judgment, arguing that it had not been served properly and its Amazon.com products were “different and distinct” from the Quincy products The court entered default judgment, finding that Quincy had effected “legally adequate service.” Ellishbooks identified no circumstances capable of establishing good cause for default. Quincy had subpoenaed and submitted documents from Amazon.com establishing that Ellishbooks had received $480,968.13 in sales from products sold as Prevagen®.The district court entered a $480,968.13 judgment in favor of Quincy, plus costs, and permanently enjoined Ellishbooks from infringing upon the PREVAGEN® trademark and selling stolen products bearing the PREVAGEN® trademark. The Seventh Circuit affirmed, rejecting arguments that the district court failed to make “factual findings on decisive issues” and erred in holding that Ellishbook knew or had reason to know that a portion of the Prevagen® products were stolen. View "Quincy Bioscience, LLC v. Ellishbooks" on Justia Law

The Official Code of Georgia Annotated (OCGA) includes the text of every Georgia statute currently in force. Non-binding annotations appear beneath each statutory provision, typically including summaries of judicial opinions construing each provision, summaries of pertinent attorney general opinions, and a list of related law review articles and other reference materials. The OCGA is assembled by the Code Revision Commission, a state entity composed mostly of legislators, funded through legislative branch appropriations, and staffed by the Office of Legislative Counsel. The current OCGA annotations were produced by a private publisher, pursuant to a work-for-hire agreement, which states that any copyright in the OCGA vests in the state, acting through the Commission. A nonprofit, dedicated to facilitating public access to government records and legal materials, posted the OCGA online and distributed copies. The Commission sued for infringement under the Copyright Act, 17 U.S.C. 102(a).The Eleventh Circuit and the Supreme Court held that OCGA annotations are ineligible for copyright protection. Under the government edicts doctrine, officials empowered to speak with the force of law cannot be the authors of the works they create in the course of their official duties. The Court noted long-standing precedent that an official reporter cannot hold a copyright interest in opinions created by judges; no one can own the law. The doctrine applies to whatever work legislators perform in their capacity as legislators, including explanatory and procedural materials they create in the discharge of their legislative duties. The sole “author” of the annotations is the Commission, which functions as an arm of the Georgia Legislature and creates the annotations in the discharge of its legislative duties. The Court focused on authorship, stating that Georgia’s characterization of the OCGA annotations as non-binding and non-authoritative undersells the practical significance of the annotations to litigants and citizens. View "Georgia v. Public Resource.Org, Inc." on Justia Law

The Eighth Circuit affirmed judgments against DatabaseUSA for copyright infringement and Vinod Gupta for breach of contract. After Gupta founded Infogroup, he and the company entered a separation agreement. Then Gupta found DatabaseUSA two years later.The court held that a reasonable juror, based on the evidence at trial, could have found Infogroup owned a valid copyright; a reasonable juror could have concluded that DatabaseUSA copied the original elements of Infogroup's work; and, because of spoliation, DatabaseUSA's two arguments against copying fail. Finally, the court affirmed the $11.2 million award for the copyright infringement claim and the $10 million award for the breach of contract claim. View "Infogroup, Inc. v. DatabaseUSA.com LLC" on Justia Law

In 2003, jury found E*Trade liable for trade secret misappropriation and for breach of a mutual nondisclosure agreement with Ajaxo. The jury awarded damages only for the breach of contract after the court granted a nonsuit on the issue of damages for trade secret misappropriation. On remand, in 2008, a jury found no net damages for unjust enrichment and awarded nothing. The court denied Ajaxo’s request to seek a reasonable royalty under the California Uniform Trade Secret Act (Civ. Code 3426-3426.11). On second remand, the court held a bench trial, declined to award any royalty, and awarded E*Trade its costs as the prevailing party.The court of appeal affirmed. The trial court did not abuse its discretion by declining to award any reasonable royalty despite the available evidence from which a reasonable royalty theoretically might have been derived, considering its findings on the evidence, application of apportionment principles from patent law, exclusion of expert testimony and analysis of Ajaxo’s royalty model, and treatment of the “Georgia-Pacific factors” for determining a royalty rate in intellectual property disputes. The trial court did not err in its prevailing party determination and costs award despite the practical effect of Ajaxo having already obtained full satisfaction of what became a separate, final judgment in its favor following the 2006 remittitur from the first appeal, including costs. View "Ajaxo, Inc. v. E*Trade Financial Corp." on Justia Law

Apotex filed a petition for inter partes review of Novartis’s patent. The Board instituted proceedings and granted Sun, Teva, Actavis, and Argentum (with Apotex, the petitioners) joinder. The Board concluded that the petitioners had not demonstrated unpatentability of the claims. During the appeal process, all petitioners other than Argentum settled with Novartis. Before opening briefs were filed, Novartis moved to dismiss Argentum’s appeal for lack of standing. Argentum argued that its standing need not be addressed because only one party must have standing for an action to proceed in an Article III Court; the other petitioners undisputedly had standing. Following the settlement of all the other parties, Apotex argued that “now that Argentum is the only appellant, Article III standing has become a threshold issue.”The Federal Circuit dismissed for lack of Article III standing. Argentum argued that it demonstrated concrete injuries in fact: a real and imminent threat of litigation as it jointly pursues, with its partner KVK-Tech, a generic version of Novartis’ Gilenya® product for which they are in the process of filing an ANDA. Argentum failed to provide sufficient evidence that it invested in KVK’s generic Gilenya® product or ANDA. View "Argentum Pharmaceuticals LLC v. Novartis Pharmaceuticals Corp." on Justia Law

Romag and Fossil signed an agreement to use Romag’s fasteners in Fossil’s leather goods. Romag eventually discovered that factories in China making Fossil products were using counterfeit Romag fasteners. Romag sued Fossil and certain Fossil retailers for trademark infringement, 15 U.S.C. 1125(a). Citing Second Circuit precedent, the district court rejected Romag’s request for an award of profits, because the jury, while finding that Fossil had acted callously, rejected Romag’s accusation that Fossil had acted willfully.The Supreme Court vacated. A plaintiff in a trademark infringement suit is not required to show that a defendant willfully infringed the plaintiff’s trademark as a precondition to a profits award. The Lanham Act provision governing remedies for trademark violations, section 1117(a), makes a showing of willfulness a precondition to a profits award in a suit under section 1125(c) for trademark dilution, but section 1125(a) has never required such a showing. The Act speaks often, expressly, and with considerable care about mental states, indicating that Congress did not intend to incorporate a willfulness requirement here obliquely. View "Romag Fasteners, Inc. v. Fossil, Inc." on Justia Law